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Blocking Injunctions - Nintendo Co Ltd v Sky UK Ltd and Others

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Jane Lambert

High Court, Chancery Division (Mr Justice Arnold) Nintendo Co. Ltd. v Sky UK Ltd and others [2019] EWHC 2376 (Ch)

This was a claim by the famous consumer electronics and video games company, Nintendo Company Limited, for an order requiring Sky UK Ltd and four other internet service providers to block, or at least impede, access by their customers to four websites that advertise, distribute, offer for sale and/or sell devices that circumvent Nintendo's technical protection measures for its game consoles.

As all the target websites used Nintendo's trade marks in their advertising, Nintendo based its application in part on principles established by the Court of Appeal in Cartier International AG and others v British Sky Broadcasting Ltd and others [2017] Bus LR 1, [2016] ETMR 43, [2016] Info TLR 1, [2017] Bus LR 723, [2016] EWCA Civ 658, [2017] 1 All ER (Comm) 507, [2016] EMLR 23, [2017] 1 All ER 700, [2016] WLR(D) 389, [2017] RPC 3 and refined by the Supreme Court i…

Contracts - Volumatic v Ideas for Life

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Jane Lambert

Intellectual Property Enterprise Court (Mr David Stone) Volumatic Ltd v Ideas for Life Ltd [2019] EWHC 2273 (IPEC) (29 Aug 2019)

This was a claim by Volumatic Ltd ("Volumatic") for specific performance of an agreement that was alleged to have neem entered by Ideas for Life Ltd. ("IFL") for the assignment of "all property rights" including certain patents in a banknote pouch for Volumatic's cash counting machines to be designed by IIFL. IFL resisted the claim on a number of grounds including whether the alleged agreement (referred to in the judgment as "the Agreement") was legally binding and, if it was, whether it could be specifically enforced.

At the case management conference, Judge Hacon had listed the following issues to be tried:

"1. Whether the Agreement (alternatively stages 2 and 3 of the Agreement) has contractual force and particularly:
(a) whether there was an intention to create legal relations;
(b) whether the ter…

Interim Injunctions - Merck Sharp & Dohme Corp v Clonmel Healthcare Ltd.

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Jane Lambert

Irish Supreme Court (Chief Justice Clarke and Justices O'Donnel Donal, McKechnie, Dunne, O'Malley and Iseult) Merck Sharp & Dohme Corp v Clonmel Healthcare Ltd.[2019] IESC 65, 31 July 2019

This was an unusual appeal in that the discretion of an applications judge and the decision of a majority of the appellate court were second-guessed after the expiry of the intellectual property right upon which the applicant for an interim injunction had relied.  The Supreme Court of Ireland allowed an appeal against the Irish Court of Appeal's decision in Merck Sharp & Dohme Corp v Clonmel Healthcare Ltd. [2018] IECA 177 to reject an appeal from Mr Justice Haughton's refusal to restrain Clonmel Healthcare Ltd. from marketing a product that was alleged to have infringed Merck Sharp & Dohme Corp Ltd' s Irish supplementary protection certificate 3005'2001.

Merck had owned patents for simvastatin, a statin for the treatment of cholesterol. and ezetimibe.…

Copyright - Kraftwerk v Pelham

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Jane Lambert

Court of Justice of the Europen Union (Presifdebt Lenaerts, President, Judges Arabadjiev, Vilaras, von Danwitz, Toader, Biltgen and Lycourgos, Presidents of Chambers, Juhász, Ilešič (Rapporteur), Bay Larsen and Rodin) Case 476/17 Hütter and another b Pelham and others [2019] EUECJ C-476/17, EU:C:2019:624, [2019] WLR(D) 439, ECLI:EU:C:2019:624

Can the reproduction of a 2-second rhythm sequence from a 1977 sound recording infringe copyright, performers' rights or other intellectual property rights?  The Landgericht (court of first instance) for Hamburg thought it did on two occasions as did the regional court of appeal. The German Supreme Court and Constitutional Court were less sure. Finding that the case turned on the interpretation of arts 2 (c) and 5 (3) (d) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society OJ L 167, 22.6.200 and of ar…

Copyright - Beck v Spiegel Online

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Jane Lambert

Court of Justice of the European Union (K. Lenaerts, President, Arabadjiev and Judges Vilaras, von Danwitz, Toader, Biltgen and Lycourgos and Presidents of Chambers, Juhász, Ilešič, Bay Larsen and S. Rodin) Case C-516/17 Beck v Spiegel Online GmbH: [2019] EUECJ C-516/17, EU:C:2019:625, ECLI:EU:C:2019:625, [2019] WLR(D) 440

This was a reference under art 267 of the Treaty on the Functioning of the European Union by the Bundersgerichthof (German federal supreme court) on the interpretation of art 5 (3) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (OJ 2001 L 167, p. 10). It arose in the course of an appeal against an appellate court's decision to dismiss an appeal from a first instance court's finding that Spiegel Online GmbH had infringed Volker Beck's copyright.

The Action
Until 2017 Mr Beck had been a member of the German fede…

Trade Marks - NXP BV v ID Management Systems

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Jane Lambert

Intellectual Property Enterprise Court (Mr Recorder Campbell QC) NXP BV v ID Management Systems [2019] EWHC 1902 (IPEC) (31 July 2019)

This was an action for trade mark infringement.  The claimant was the registered proprietor of several EU trade mark registrations of the word MIFARE for goods in class 9 either simpliciter as in  EU10920007 or in combination with a device as in WE1191506.  The claimant complained that the defendant company had infringed those trade marks by selling counterfeit smart cards on two occasions.

This action started in the small claims track of the Intellectual Property Enterprise Court.  The claimant had limited its claim to £10,000 and did not allege that the defendant had infringed its trade marks on any other occasion.  Nevertheless, on reviewing the papers the district judge transferred the case to the multitrack on his own initiative. Neither party appealed his decision.

The claim came on for trial before Mr Recorder Campbell QC on 4 July …

Patents - Quinn v Linpac

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Jane Lambert

Intellectual Property Enterprise Court (HH Judge Hacon) Quinn Packaging Ltd v Linpac Packaging Ltd and another  [2019] EWHC 2119 (IPEC) (31 July 2019)

This was a claim by Quinn Packaging Ltd. for the revocation of British patent GB1100292.0 which is held by Linpac Packaging Ltd. on the ground of obviousness. Quinn also claimed the revocation on the same grounds of a patent that had been granted to Faerch A/S the title and number of which are not mentioned in the transcript. The item of prior art relied on by Quinn in both cases was Australian Patent No. 638092 Method for manufacturing containers provided with a peelable closure,

The issue in dispute was whether a skilled person who read the Australian patent before the priority dates of the Linpac and Faerch patents knowing of the need for a better sealing solution for plastic food trays would have recognized that the Australian patent provided the answer, namely the idea of creating a flange around the top periphery of t…